1. Intellectual Property 2016 Therese Catanzariti
Designs
Intellectual Property
2016
Therese Catanzariti
Therese Catanzariti

2. history artist craftsman => industrial designer
1754 Royal Society of Arts
1787 Designing and Printing of Linens Act 1787 (Eng) 27 Geo III c 28
Fabric design – linen, muslin, cotton, calico
Sole right of printing design for 2 months
Manchester mills – linen, muslin, cotton, calico
THEN any ornamentation on products
THEN any visual features of products
1906 Designs Act
2003 Designs Act
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3. principles of design easy to manufacture
easy to use – “out of box readiness”
ergonomically sound
Good design is obvious. Great design is transparent
Everything is designed. Few things are designed well.
The design process, at its best, integrates the aspirations of art, science, and culture.
I don't design clothes, I design dreams - Ralph Lauren
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4. Sir James Dyson Painting - Byam Art School (now Central St Martins)
“I just want things to work properly.”
Painting - Byam Art School (now Central St Martins)
Furniture and interior design – Royal College of Art
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5. Sir Jonathon Ive “Its very easy to be different
Its very difficult to be better.”
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6. culture-specific
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8. key issues Appearance of product / visual features
NOT function / performance (patent law)
NOT method of construction
NOT product itself – separate and distinct from product
In relation to product
Microsoft Type Font – type font design not specify tangible thing
Re Comshare Inc –computer screen display not product as ephemeral separate from computer screen
Monopoly – does not require copying
Term – maximum 10 years from filing date
(5+ optional 5) – s46
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11. design
"design" , in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product – s5
Re Wolanski (necktie support) –monopoly for on particular individual and specific appearance
product – thing that is handmade or manufactured – s6
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12. Visual feature – s 7
“Visual feature” in relation to a product, includes the shape, configuration, pattern and ornamentation of the product
Visual feature may but need not serve a functional purpose
NOT
The feel of the product
The materials used in the product
If the product has one or more indefinite dimensions
The indefinite dimension
If the product also has a pattern that repeats itself – more than one repeat of the pattern
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13. court determine Court determine what is a visual feature
tho expert evidence may provide technical assistance
Dart Industries v Décor (1989) 15 IPR 403
“the design is the mental conception conveys to the mind by the eye…
Court determine meaning of design …
while some designs are so simple… the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them”
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14. pattern, ornamentation – 2D
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15. pattern, ornamentation – 3D
hot water bottle ribbing
Cow & Co v Cannon Rubber
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16. shape, configuration – 3D
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17. Indefinite dimension
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18. particular appearance
monopoly for one particular, individual and specific appearance
NOT if suggest general shape appropriate to function that are consistent with a variety of particular shapes
Firmagroup Australia v Byrne & Davidson Doors – (1987) 9 IPR recessed handle and lock for shutter doors
Re Wolanski (1953) 88 CLR necktie support
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19. Particular appearance
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20. new and distinctive
registrable design if new and distinctive compared with prior art base for the design as it existed before the priority date – s15
Prior art base – s15(2)
Designs registered
Designs publicly used within Australia
Published anywhere
NOT published without owner’s consent – s17(2)
NOT artistic work not industrially applied – s18
NOT prescribed by regulations – s17(1)
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21. new and distinctive
new - new unless it is identical to a design that forms part of the prior art base for the design – s16(1)
distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base – s16(2)
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22. is design substantially similar in impression
more weight to similarities than differences – s19(1)
factors – s19(2)
State of development of prior art base
Whether statement of newness and distinctiveness identifying visual features as new and distinctive
If only part, amount, quality and importance of that part in the context of the design as a whole; and
regard to freedom of creator to innovate
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23. Informed user
“informed user” – standard of person familiar with product - s19(4)
Review 2 v Redberry – familiarity with fashion trends, not necessarily fashion designer
Multi-Steps – not general body of consumers
studied comparison not casual impression
- must be familiar but does not have to be a user of the products
Does not need to be a fruit packer
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27. Keller v LED Technologies
combination dual lens rear lights for motor vehicles
absence of visible screws
different visual features of the rear or base views
cut out or recess at end of lamp
the sloping, rounded mounting brackets surrounding the lenses
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28. Owner – s13 Designer – person who created design
Employer if created in course of employment
Person who commissioned under contract
Assignee
Legal personal representative
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29. Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 – modular rainwater tanks
designed on his own property during his own time
nothing associated with his conditions of employment that created a general expectation that he create new designs for tanks;
no specific direction given by the employer that led to the development of this tank
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30. registration owner entitled to register – s13 May file File
Common design for number of products – s22
Multiple designs for one product – s22
File
5 copies of each representation of each design – s21
design must be reasonably clear and succinct - appear with reasonable clarity and without requiring unreasonably prolonged or complicated series of deductions from registration – Keller v LED
(optional) statement of newness – s69
May be taken into account for infringement – s19
No pre-registration examination
IP Australia only checks formalities – s39, 40
IP Australia only examine post grant, on request – s63
need examine before bring proceedings – s73
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31. registration v publication
Applicant may elect publication or registration – s35
Publication not stop infringement
BUT stop other registration - part of prior art base
Useful if large number of designs
similar to honest concurrent user
May withdraw registration and request publish only – s38
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32. rights – s10
to make or offer to make a product which embodies the design;
to import such a product into Australia for sale, or for use for the purposes of any trade or business;
to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product;
to use such a product in any way for the purposes of any trade or business;
to keep such a product for the purpose of such sale, hire or use
to authorise another person to do such things
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33. Infringement – s71
makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design;
imports such a product into Australia for sale, or for use for the purposes of any trade or business;
sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product;
uses such a product in any way for the purposes of any trade or business;
keeps such a product for the purpose of sale, hire, disposal or use
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34. Infringement Owner can commence proceedings – s73
NOT exclusive licensee
1906 “fraudulent or obvious imitation”
2003 – identical or substantially similar in overall impression
more weight to similarities than differences
Foggin v Lacey (Orgasmatron) – compare to design not to product
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35. spare parts – s72
Person use or authorise use of product with registered design
Product is component part of complex product
Use for purpose of repair of complex product to restore its overall appearance in whole or part
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36. Remedies – s75 Injunction Damages Account of profits
Additional damages – s75(3)
Court may not award damages or account of profits or reduce damages if – s75(2)
not aware design registered
AND taken reasonable steps to ascertain if registered
Prima facie registered defendant aware if product or packaging say registered design – s75(4)
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37. copyright/design overlap
Copyright term life+70 years
copyright in artistic work include right to reproduce
=> Copyright rights include creating products
limit copyright protection for essentially industrial products
Part III, Division 8, Copyright Act
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38. differences Nature of rights Ownership Registration Term
Copyright – prevent copying, allow independent creation
Design - monopoly
Ownership
Copyright – author, employer, assignment in writing
Design – author, employer, commissioner
Registration
Copyright – subsist on creation, no registration
Design – registered on Design Register
Term
Copyright – author life+70 years
Design – 5+5 yrs
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41. resolving the conflict
Part III, Division 8, Copyright Act
limit copyright protection for essentially industrial products
if products infringing design
If registered design, can only claim infringe design, not infringe copyright
If no registered design but design industrially applied, cannot claim infringement
exception
Works of artistic craftsmanship
Other copyright infringement (eg publish design in book)
unless incidental to making product (plan to plan copying)– s77A
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42. no copyright infringement
If corresponding design registered – s75
=>not infringe copyright in artistic work to reproduce work by embodying work or corresponding design in product
If corresponding design not registered – s76
corresponding design industrially applied with copyright owner’s licence
not work of artistic craftsmanship
=>not infringe copyright to reproduce work by embodying corresponding design in product
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43. “corresponding design”
“corresponding design” - visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work – s74
Shape or configuration – does not include designs for 2D such as wallpaper, textiles
embodied - woven into, impressed on or worked into the product
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44. “corresponding design”
“corresponding design” - visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work – s74
embodied - woven into, impressed on or worked into the product
Polo v Ziliano Holdings – Ralph Lauren polo logo not embody design, as embody needed to give a material or discernible form to abstract principle
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45. no infringement
Not infringe copyright in artistic work to reproduce work by embodying work or corresponding design in product
If corresponding design registered– s75
If corresponding design unregistered but
applied industrially to products
Regulations – more than 50 units
Press Form v Henderson –may be less than 50 if complex articles
AND products sold, let for hire or offered or exposed for sale or hire – s77
Exception for works of artistic craftsmanship
Sheldon v Metrokane – bottle opener
Burge v Swarbrick – boat plug and mouldings
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46. works of artistic craftsmanship
arts and crafts movement / anti-industrial
John Ruskin, William Morris, Tiffany – V&A
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47. works of artistic craftmanship
George Hensher v Restawhile [1976] AC 64 – chicken wire prototype of sofa chair
Coogi v Hysport- commercial fabric
Merlet v Mothercare (1986) RPC 115 – baby cape
Sheldon v Metrokane (2004) 61 IPR 1– rabbit corkscrew
Burge v Swarbrick (2007) 232 CLR 336 – boat plug and mouldings
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48. Sheldon v Metrokane - rabbit corkscrew
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